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Thursday, 14 October 2010

"Code of Industrial Property reform simplifies protection measures", by Cesare Galli (IP Law Galli, Italy), gives an account of the recent improvements to that country's Code of Industrial Property. While the reforms affect all areas of IP, this article makes some patent-specific comments:

* "Applications for interim measures ... are promptly examined. ... Parties seeking measures (in particular, description orders) to protect patents must take account of the time needed for expert consideration and the judge's review of the evidence, but such recourse is usually available within a few months [This seems a very long time and appears to suggest that more attention is paid to issues within the purview of an expert -- i.e. technical issues relating to the content of patent claims and validity -- rather than on the current and likely future positions of the parties in the event that provisional relief is granted or refused]".

* "... such measures may be jointly sought. .. This will allow IP rights owners and their professional advisers to develop new and more effective protection strategies [So presumably a patent troll or university R&D institute might have little chance of obtaining interim injunctive relief when it makes and sells nothing itself, while an application for such relief made with a manufacturing licensee will have a better prospect of success]. A new procedural instrument has been introduced. Preventive expertise is useful in cases where a patent owner is unsure about a possible infringement and needs a prompt technical assessment of the issues of validity and infringement, which can then be used in a subsequent legal action or to reach settlement more quickly".

* " ... In order to address ... uncertainty ... the reform clearly codifies the right to obtain an assessment of non-infringement (which may be sought in an interim context). This formal confirmation may be useful to prevent wrongful uses of IP rights (particularly invention patents), which is often a criminal problem [It would be good to know more about the criminal dimension of patent infringement: can any reader help?]. The reform also clarifies (in a rule applicable to pending proceedings) that in patent invalidity actions it is sufficient to summon the party indicated as the rights owner in the relevant public register; the inventors who transferred the right and the licensees are not required. This change significantly simplifies merit proceedings in such matters, as well as saving time and money [what took so long?]".